Song Continues For “The Jazz Corner” After “The Corner” Fails In Trademark Dispute – Media, Telecoms, IT, Entertainment

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While jazz outliers might invoke Miles Davis’ album “On the Corner” and rock aficionados would hasten to quote Creedance Clearwater Revival’s “Down on the Corner”, when it comes to music. battle of Melbourne’s concert halls, the Federal Court of Australia ruled the city large enough for “The Corner” and “The Jazz Corner” to coexist without confusion.

The recent case of Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) [2021] FCA 328 (April 9, 2021) reinforces the importance of taking into account the impression left by one or more unusual elements when comparing trademarks in trademark infringement cases, especially in circumstances where a shared element is deemed descriptive or laudatory.

Background

Swancom Pty Ltd (the applicant) is the registered owner of Australian trademark registrations 1388154 CORNER HOTEL, 1623364 CORNER PRESENTS, 1442211 CORNER and 1669900 THE CORNER for hospitality and entertainment services in classes 41 and 43. Since 1995, the Plaintiff owned hotels offering live music in the Melbourne suburb of Richmond which hosted performances of well known Australian and international acts. These included (among others) Crowded House, Powderfinger and Men at Work. “The Corner” was also the place where U2 recorded a music video and Jack White of The White Stripes wrote the well-known riff for the song “Seven Nation Army” during a sound check.

The Jazz Corner Hotel Pty Ltd, Bird’s Basement Pty Ltd, Saint Thomas Pty Ltd, Ubertas Operations Pty Ltd and the sole director of these companies Albert Dadon (the respondents) operated businesses at a hotel in the central business district of Melbourne. Ubertas Operations Pty Ltd is owned by trademark registrations used by The Jazz Corner Hotel Pty Ltd including registrations 1825739 and 1839135 JAZZ CORNER and 1821433 JAZZ CORNER HOTEL for various hotel, nightclub, food and beverage services in class 43 and registrations owned by Saint Thomas Pty Ltd 1893220 JAZZ CORNER and 1906026 1083062b.jpg for coffee services. Bird’s Basement Pty Ltd operated an associated jazz room in the basement of the building.

The plaintiff alleged that the respondents’ use of JAZZ CORNER OF MELBOURNE, JAZZ CORNER OF THE WORLD, JAZZ CORNER HOTEL and JAZZ CORNER CAFÉ in connection with music reservation and ticketing services infringed its CORNER recordings and requested the cancellation of the respondents’ JAZZ CORNER recordings. The respondents denied the infringement and, in a counterclaim, sought the partial annulment of the plaintiff’s recordings, in particular on the grounds that the respective CORNER marks were not distinctive from the Class 41 services claimed in those recordings.

Distinctive character of the “wedge”

The respondents argued that the plaintiff’s marks for CORNER and / or CORNER HOTEL were not distinctive for its Class 41 music services, ticket reservation or related services. The respondents also suggested that “corner” described a hotel “being located at the junction of two roads” and that the common meaning of “around the corner” would be recognized by Australian consumers as a description of a location. However, the Applicant argued that, on the basis of substantial evidence and its reputation, its “CORNER” marks had the ability to distinguish them (as of the filing date).

O’Bryan J. found that with the exception of CORNER PRESENTS, the plaintiff’s CORNER marks were not distinctive with respect to hotel services because CORNER described the geographic location of hotels. However, they were able to function as a trademark for services relating to the staging of live musical performances, particularly in view of the reputation of the applicant prior to filing.

The Court also considered whether the plaintiff’s registrations for CORNER and THE CORNER should be restricted in order to preserve the freedom of other entertainment service providers to use the word “corner” in their trade names (such as music providers). live free or sports cinemas). However, His Honor considered that this was an issue on which the parties should submit comments at a later date.

Use as a trade mark and deceptive similarity

The Court’s assessment of infringement was essential, first, whether the respondents had used the JAZZ CORNER marks as trademarks for live music services and, second, whether those marks were deceptively similar to the CORNER marks of the applicant.

On the issue of “use as a mark”, Justice O’Bryan noted that Bird’s Basement was a separate jazz club in the same building which offered accommodation and cafe services under various JAZZ CORNER brands and shared common property. While the jazz club itself used the “Bird’s Basement” trademark, His Honor felt that consumers would recognize the JAZZ CORNER businesses in the building as providers of live musical performances. This was the case for the JAZZ CORNER HOTEL, JAZZ CORNER CAFÉ and JAZZ CORNER OF MELBOURNE brands. JAZZ CORNER OF THE WORLD, on the other hand, was considered to be recognized as descriptive of a jazz hall and the use of the latter mark was not used as a mark.

Despite the finding on use, the Court held that the Respondent’s JAZZ CORNER marks were not deceptively similar to the Applicant’s CORNER trademarks. While noting that the word “jazz” had a descriptive meaning, His Honor felt that the incorporation of “jazz” left “a more striking impression” on the mind of an ordinary member of the public compared to “coin. “And” hotel “. In addition, “the corner hotel” was descriptive because “from the early days of European colonization of Australia to the present day, hotels have been called the” corner hotel “” (see
[249]-[250]).

Related issues

Although O’Bryan J. found that the respondents’ use of the JAZZ CORNER marks did not infringe the applicant’s CORNER marks, for completeness His Honor also considered whether the respondents would have any defenses against counterfeiting.

Justice O’Bryan noted that the use of JAZZ CORNER OF THE WORLD and JAZZ CORNER OF MELBOURNE was not a good faith “description”, as the marks had an allusive meaning and were not used to describe their services. In addition, there was no “prior use” by which the respondents could obtain registration of these marks. For the other JAZZ CORNER marks, the rights in Class 43 recordings did not extend to Class 41 music services and, therefore, they did not simply exercise the rights granted by existing trademark registrations.

O’Bryan J. also considered whether, in a finding of infringement, the plaintiff could have set aside the respondents’ tapes. His Honor noted, however, that live music services did not fall within the scope of the respondents’ relevant recordings and, therefore, the recordings could not be canceled.

Conclusion and key to remember

Although the plaintiff’s infringement and annulment claims were dismissed, a notice of appeal was filed and, therefore, it remains a “watch this space” scenario. The ruling, however, serves as an important reminder for trademark owners to consider whether additional elements in their marks create a different or “striking” impression from the overall impression of their mark – especially where commonly shared elements may be considered descriptive or complimentary.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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